So it seems the gun world is up in arms (that’s right, I went there) about the fact that the Spearmint Rhino chain of strip clubs has sued gun manufacturer Chiappa Firearms for using a confusingly similar mark on its RHINO 40DS model .357 magnum (Spearmint Rhino Companies Worldwide Inc. v. Chiappa Firearms Ltd et al., 2:11-cv-05682-R–MAN, Central District of California). I’ve seen no comment from the strip club community. Apparently they have what they regard as better things to focus on.

Let me mention at the outset that a good friend and eminent member of the Michigan bar tipped me off to this, uh, tussle. I appreciate it very much because a) it provides a great opportunity to talk about an enduring public misconception about trademark infringement, and b) nothing drives traffic to a blog like the phrase “strip club” in a post title.

The Spearmint Rhino and Chiappa trademarks at issue in the law suit.

Here’s a good photo showing a comparison of the marks, courtesy of this article on the GUNS.COM site. (I couldn’t help smiling at the phrase “PLENTY of VIDEO” in the title – another savvy web marketer at work. Touche, my friend.)

I don’t think it’s unreasonable to observe that, aside from the rhinos facing in different directions, the marks actually do look quite similar. Spearmint Rhino has registered its rhino-outline-in-a-circle mark for “T-shirts and hats; lingerie, namely panties, g-strings, brassieres and corsets for semi-nude and erotic dancers; golf clothing, namely golf shirts, jackets, vests and caps.” Chiappa has registered its rhino-outline-in-a-circle mark for firearms, but not clothing.

If you clicked over to the GUNS.COM article (and I hope you did), you’ll notice that both the article itself and the reader comments express some surprise and doubt that Spearmint Rhino’s suit has any merit. I believe the phrase “snowball’s chance in hell” shows up prominently. This line of thinking can perhaps be summed up as: no one would ever confuse pistols for panties. Or maybe: how can you mix up guns and G-strings? Or how about: one holds bullets, the other holds boobs – case closed! (Sorry. Traffic, you understand.)

So, would anyone really go out to buy a gun and come home with a G-string instead? Okay, I’ll grant that one can imagine situations where that might happen. But would it happen because of confusion caused by the trademarks involved?

The answer to that question is, probably not – but it doesn’t matter. This is where the enduring public misperception comes into play. Trademark infringement is not limited to situations where customers are confused into buying one party’s product thinking they’re buying another’s. This is the important take-away from this article.

People often don’t realize that trademark infringement also exists when the nature of the marks and goods could cause the public to believe there is some connection (such as license, for instance) between the two companies, when in fact that connection doesn’t exist. Again, not the undies. This is the important part.

Looked at in that light, maybe Spearmint Rhino’s legal claims don’t seem so ridiculous after all.

First of all, while the frilly underwear may be more fun to focus on, hopefully you noticed that Spearmint Rhino’s trademark registration also covers T-shirts, hats, golf shirts, jackets, vests and caps. It’s not unusual at all for makers of outdoor lifestyle products to use their marks on that kind of clothing.

– The famous REMINGTON mark is registered for guns, but also for similar clothing goods.

– Heck, for that matter, the famous HARLEY-DAVIDSON MOTOR CYCLES trademark is registered for motorcycles, but also for hats and caps, and even for “T-Shirts, Tank Tops, Halters, [and] Panties.”

Second, how are these kinds of lifestyle trademarks commonly used on clothing? By licensing the trademark to another company that’s already in the clothing business. For some reason, people who spend all day boring out gun barrels don’t want to spend their evenings with straight pins in their mouths, basting seams.

So, when we strip away (sorry) all the rhetoric, what do we have here? Two marks that are pretty darn similar in appearance. One is used on guns, and one is used on a line of products that often have famous gun trademarks on them, via trademark license.

Could anyone see the Spearmint Rhino mark on, say, a baseball cap and mistakenly believe that the mark was licensed by the gun maker Chiappa? You can draw your own conclusions, but hopefully I’ve given you a better legal framework to think the matter through.

There’s an old comedy bit where the comic offers to teach you “everything you’re going to remember from college, ten years after graduation.” The crash course is offered at a hefty price, but much less than four years of actual college tuition. There’s a little of that in what we’re going to discuss here today, except for the hefty price of course.

Once you absorb all the knowledge in this article, people will come from miles around to meet you and marvel at your Giant Trademark Brain. And the Law of Averages says that some percentage of them will buy your product, too.

In more than 20 years of advising business owners in the area of trademark law, I’ve noticed many little tidbits of knowledge that I find myself passing along to client after client. These are things that most business owners and marketing people either don’t know at all or have enduring misunderstandings about.

Each of these nuggets of information, standing by itself, is not very impressive – but knowing all of them will really increase your comprehension of the trademark process. For that reason, I have decided to present them all in one place. So gird your loins and get ready for a crash course in trademark knowledge.

Thing 1: Trademark rights are created by use of the mark on your goods or services. Registration of your mark is an important way to increase and extend those rights.

Thing 2: There is no functional difference between “trademarks” and “service marks” – trademarks identify goods (for example, BUDWEISER® for beer) and service marks identify… that’s right, services (e.g., HOLIDAY INN® for hotel services.) So for the rest of this post, let’s simplify things by calling them all trademarks, or just marks.

Thing 3: You don’t register a trademark for “everything,” you register it for specifically identified goods and/or services that are spelled out in your application. The more types of “things” you want to cover, the more you’ll pay in filing fees for the application.

Thing 4: Give a lot of thought to what goods/services you want to cover before filing your trademark application, because once the application is filed you cannot broaden its coverage (you can only narrow it, by taking things out.)

Thing 5: New trademark applications literally are filed every minute at the U.S. Patent and Trademark Office. Once you decide on a mark and goods/services, file your application as soon as possible to minimize the chances that someone else will “beat you to the punch.”

Thing 6: No, you cannot file a trademark application or keep alive a registration for a mark you have no current intention of using, just to “keep people away from it.”

Thing 7: The designations TM and SM that you see everywhere really have no official significance. They are used unofficially, to indicate that the user regards the name as proprietary.

Thing 8: You may not use the ® symbol with your mark until your mark is actually registered (not just filed.) After the registration issues, you should always use it at least once on every package, advertisement, marketing piece, etc.

Thing 9: You should always search a new product name (the earlier the better) before committing to it or using it. Not doing so is a dare to the Trademark Infringement Gods.

Thing 10: Because trademark rights arise from use (see Thing 1 above), trademark searching is an art and not a science. When searching for potential users of conflicting marks in the vast universe of information out there, you have to choose some logical place to stop. Always remember that, for these reasons, no trademark search is perfect – just the best search reasonably feasible at the time it’s conducted.

Thing 11: Minor differences in spelling and inventive spellings won’t make an otherwise infringing mark “safe” to use or register.

Thing 12: In a similar vein, you probably attach a much greater significance to small product differences within your industry than the general public (or a judge) will. This means that when comparing products to determine whether you infringe someone else’s mark, the judge is not going to be swayed by the argument that “no one could be confused because the products are totally different – theirs is a 6-pin device and ours is an 8-pin device!”

Thing 13: When choosing a new name, remember that the more closely it describes the product (or some feature or function of it), the more likely you are to have problems with availability and/or protection. I could give you a half hour on why, but just trust me on this. You’re much better off picking a name that is not descriptive.

Thing 14: Word mark registrations are inherently more flexible than logo/design marks, because use of a registered word mark as a part of your logo is covered by the registration. The reverse is not true.

Thing 15: Because of Thing 14, when first starting down the registration path (and anytime cost/budget is a large factor), it’s usually advisable to register the word form of your mark first and register the logo version when finances allow.

Thing 16: It can take many months for an application to mature into a trademark registration, but there’s no reason to hold off on using the mark in the meantime. Quite the opposite, in fact – usually you’re better off starting use as soon as possible.

Thing 17: The time to think about whether your new name will actually be available for you to use is as soon as possible. Yesterday, if possible. A month ago, better yet. Leaving that issue until the last minute invites bad decision-making and disaster.

Thing 18: Most trademark infringement disputes are resolved through negotiation before any suit is filed, usually with the “junior user” being provided some time period to shift over to a new name. But don’t take this as an excuse to go forward with a name you know is questionable, because the first sentence often doesn’t apply where the infringement appears intentional. In those cases, the aggrieved party may go straight to court.

Thing 19: Using or registering your new name as a domain name does not create trademark rights, unless you use that domain name in a trademark-like way on your website.

Thing 20: Similarly, merely registering your corporate name with your state’s secretary of state does not create any trademark rights or constitute any type of government approval for you to use the name as a trademark.

Thing 21: In the trademark world, as elsewhere, what goes around comes around. Don’t try to nestle up to a competitor by using a similar mark. You wouldn’t want anyone doing that to you. Don’t make me be your mom on this – Golden Rule, and all that.

This is not, of course, intended as a complete list. Hopefully it is helpful, though. If I get good response on this article, I’ll think up some more bits of important knowledge. And then, dear reader, together we can venture down the uncertain path of the sequel.

Someone didn’t do their homework, and it’s going to be a costly and embarrassing lesson.

The Hells Angels Motorcycle Club has sued the Alexander McQueen fashion house for trademark infringement. The suit was filed October 25, 2010 in U.S. District Court in Los Angeles. The club also named the Saks retail chain and Internet retailer Zappos.com as defendants for their roles in selling the allegedly infringing products.

In its complaint, the Hells Angels club requests findings that the defendants infringed its trademarks and committed unfair competition and trademark dilution. The club seeks an injunction preventing additional sales of the alleged infringing products as well as a recall of the alleged infringing inventory. The Hells Angels ask that the inventory be delivered to a third party for destruction. Finally, the club seeks money damages which it asks be multiplied because of the blatant and “exemplary” nature of the infringement, along with the club’s attorney fees for the action.

The motorcycle club claims that Alexander McQueen Trading Limited, the fashion house founded by designer Alexander McQueen (who committed suicide earlier this year), infringed its winged skull design mark by using it in a multi-finger “Hell’s Four Finger” ring and “Hell’s Knuckle Duster” clutch handbag (see pictures.) The suit also claims that the defendants infringed by marketing a jacquard dress and a pashmina scarf using the word mark HELLS ANGELS, without authorization by the club.

The Hells Angels club registered a winged skull design (which the club calls the “HAMC Death Head design”) in 2009 as U.S. Trademark Registration No. 3666916 for goods including “jewelry, jewelry pins, clocks and watches, earrings, key rings made of precious metal, badges made of precious metal, and chains made of precious metal.” An image of the registered design appears at right, below. In its complaint, the club claims use of the design since 1948.

An image of the "HAMC Death Head design" mark registered for various goods, including jewelry, by the Hells Angels Motorcycle Club.

The same design is registered separately (U.S. Reg. No. 3311550, issued in 2007) for “clocks; pins being jewelry; rings being jewelry.” In that registration the Hells Angels claim use of the mark on those goods since 1966.

What Happened Here?

This is, by all appearances, a tremendous blunder by Alexander McQueen Trading Limited, as well as Saks and Zappos.com. You’re welcome to judge for yourself, of course, but to this observer the designs used by the defendants unquestionably are confusingly similar with the design registered by the Hells Angels. The use of the words “HELL’S” and “HELL’S ANGELS” merely completed the effect, making it a virtual certainty that consumers would perceive some connection with the infamous motorcycle club.

Here, boys and girls, we have a perfect example of why marketers should always consult an experienced trademark practitioner well in advance of introducing a new product line. It frankly seems hard to believe that marketers as savvy as those at the House of McQueen, Saks and Zappos.com could have failed to recognize the potential trademark implications of their actions here. Perhaps they did.

In any event, it’s highly unlikely that these product ideas would have survived a review by an attorney experienced in trademark law. Right about now, it probably seems to the good people at the House of McQueen, Saks and Zappos that a review by their trademark attorneys would have been money well spent.

This series discusses trademark issues that arise in the context of band names. My previous posts in the series have covered finding a name, registering that name, and avoiding problems when selling so-called “merch” goods, especially clothing, bearing the name. To close out this series, I’d like to take a few moments to discuss exactly how it is that bands own their names, from a legal perspective.

"Hello and welcome to our partnership meeting! Sing along if you know the words!"

So, you’ve got yourself a band and things are going well. The band’s name is becoming more and more well known, and the future looks bright. Bands differ in many ways – they may play different music, using different instruments, in different venues, to different audiences, to different audiences.

Then again, anyone with any experience playing music will tell you that all bands have one thing in common: they tend to break up, sooner or later. When that happens, who owns the name?

To answer that question, which is after all a legal conclusion, you have to consider what exactly the band was… From a legal standpoint, that is. (And here’s a hint: it’s even better to think about this issue before your band breaks up…)

Partnership Is the Default Status

The law of Illinois and Indiana, where I am admitted to practice (and also the law of many other states), presumes that when a group of individuals act together for a common purpose and when they share the profits and losses of those actions, they have created what is generally referred to as a “common law partnership.” This includes people working together as a band since, when you stop to think about it, a band’s activities fit that general definition quite well.

Without a written agreement to the contrary, the law in most states will assume a number of things about a band’s partnership. One of those assumptions the law makes is that all members of the partnership have equal ownership of, and an equal right to use, all the assets of the partnership. In the case of a band, those assets include the band’s name.

Problems Under Partnership Law

So under general partnership law, unless there is a written partnership agreement to the contrary, all band members/common law partners would be equal owners of the band name and any associated logos. In addition, any current or former member would be permitted to use the name. Because trademark rights are determined by who uses a mark and not who created it, each of the members of the Band would be an equal co-owner of the group name under trademark law.

Given the propensity of musicians to join and quit bands, the prospect of former band members having some ownership interest in the name tends to be a little disturbing to the remaining band members.

Solution: A Written Partnership Agreement

Obviously, you can own and use a band name trademark as a common law partnership – most bands never even consider the issue, and as a result that’s how they own and use their names. You can even register the name as a trademark, listing the common law partnership as the entity that owns the mark. But absent a written partnership agreement to govern ownership of the name in the event a band member/partner leaves or the partnership dissolves (i.e., the band breaks up), figuring out who owns the rights in the name could get very messy.

Obviously, in the case of most music groups, a written partnership agreement is preferable to general partnership law. Once a band partnership agreement is created, it can function like a prenuptial agreement and, if need be, help make the break-up process less painful.

Other Alternatives: LLC or Corporation

It’s also possible to form a limited liability company (also known as an LLC) or a corporation for the band. These more formal forms of organization may work better for your band, depending on the sophistication of the band’s operations.

In either event, it’s a good idea to work with an attorney who knows the ins and outs of each form of organization, as it relates to music groups. As with many areas, spending a little money now on legal assistance may avoid much greater costs and headaches later.

Gwen Stefani isn't going to screw up and step on someone's toes in the rag trade. You, on the other hand, might.

In the preceding post in this series, I mentioned some reasons why it’s a good idea to hire an attorney with experience in trademark law to handle the application to register your band name. There are other reasons why hiring an attorney for this process is a good idea, though. For instance, your attorney will have the experience to know whether existing trademarks covering peripheral “merch” goods categories are problematic.

What do I mean by that? Well, when you put your band name/trademark on goods like clothing, you are wading into an industry not directly related to music or entertainment. The apparel industry has its own brands and, unless you’re Gwen Stefani, as a musician you may be unaware of another identical or highly similar brand name in that industry.

Music and fashion tend to track similar trends, attitudes and tastes, however. Both emphasize youth, rebellion and counterculture style. This makes it understandable that similar or identical names might arise in both the music and fashion industries. So, as an example, it would’t be surprising for a band named “RAGE OF ANGELS” to bump into an existing clothing brand also called “RAGE OF ANGELS.”

Is this a problem? Well, if the brands are identical as in the above example, and if you hope to use and register your band name for clothing, the answer is almost certainly yes. That’s a relatively easy call for anyone to make. But what if the names are not identical but merely similar to a greater or lesser extent? Now it becomes a judgment call. And this is by far the more common occurrence, by the way.

This is no small issue. Many bands rely heavily on the money they make from sales of “merch” goods, and tee shirts and other clothing items form a dominant part of those sales. All the more reason to have an experienced attorney search the name for these goods at the outset, in order to avoid these problems.

An attorney with experience in trademark law is better equipped to make that judgment call. It probably would be more than worth the cost of a bit of attorney’s time to avoid wasting $275 – $325 in filing fees (for a clothing category), not to mention whatever problems and costs may come with a challenge or opposition by the clothing brand.

You want to focus on rockin’ the joint up, not on cease and desist letters from fashionistas. Save yourself the headaches and work with an attorney who knows how to spot a potential issue in this arena and can help you avoid problems.

The first post in this series discussed issues related to finding a band name that is available for your use. Now we can talk about protecting your band’s name against encroachment by other acts.

So now you’ve found a band name that everyone in and out of the band loves, and it has passed the availability searching test I discussed in the previous post. How do you create and strengthen your rights in the name, so no one else takes it?

Rehearsing is great guys, but maybe you should take five and get started on that trademark application for THE EEL RIVER BOYZ.

First, you use the name. You use it in the band’s promotion and performance. You create the same types of sites you were searching for earlier, using the band name prominently on your website, on a Facebook page, a Myspace page, and so on.

Next, you register your band name. You register it as a domain name; you register it on the band name databases; you set up a presence on Sonicbids. And, most importantly, you register your band name as a trademark and service mark for the goods and services you sell under the name.

Trademark Registration

Before starting down the path towards registration of your band name as a trademark, it’s important to understand that trademarks are not registered for all possible goods and services. Instead, your trademark wil be registered to cover the specific goods and/or services you identify in your application.

So what do you sell, as a band? Live entertainment services? Recorded music? What about the “merch” you’ll sell bearing the band’s name – shirts, hats, posters, stickers, buttons, jewelry, key chains, shot glasses/beer glasses/coffee mugs? All of the above? Depending on your budget, you’ll want to cover as many of these goods and services as possible in your trademark application.

Coverage for Your Application Means USPTO Filing Fees

I mention your budget because the U.S. Patent and Trademark Office charges filing fees when you file a trademark application. Those USPTO filing fees are based on how many International Classes of goods and services your claimed goods and services fall into. The International Classification system categorizes all conceivable goods and services into 45 separate Classes – a very general breakout of what falls within each Class can be found HERE.

USPTO filing fees vary depending upon how idiosyncratic your descriptions of the goods and services need to be. If you are willing to use fairly generic pre-approved wording for the descriptions (and meet other requirements for your application), you can limit your filing fees to $275 for each International Class your goods and services fall into. If for some reason accurately describing your goods or services requires more customized wording, the USPTO will charge $325 per Class in filing fees.

In my experience, for most bands the most important services to cover in a trademark application (in order of decreasing importance) are:

 Live entertainment services (which fall into International Class 41);

 Recorded music in various formats (which falls into International Class 9);

 Clothing bearing the band’s name and/or logo (which falls into International Class 25); and

 Printed goods such as posters, stickers and event programs (which fall into International Class 16).

As you can see, filing fees can add up quickly. Covering just the above four Classes in your application will amount to $1,100 in filing fees charged by the USPTO. This means that you’ll want to think carefully about what’s most important to cover in light of your band’s finances. Perhaps your budget only allows for one or two Classes, in which case I would opt for the first one or two categories above.

Do You Need an Attorney?

If you hire an attorney to file and prosecute your trademark application, that attorney also will charge separate professional fees for those services. Why go to that expense, you may ask yourself.

Hiring an attorney who is experienced in the practice of trademark law is not an absolute necessity for the registration of your mark with the USPTO. But an experienced practitioner knows how to prepare an application and deal with the USPTO examiner in a way that helps ensure that the resulting registration will give you with the broadest rights possible. Is it worth the money? You bet it is.

File Right Away

The USPTO will accept your application right away, you don’t need to begin using the band name before you file your application as long as you can assert that you have a bona fide intent to use the name. In fact, it’s best to file sooner rather than later. Every day that goes by is a day someone else could file an application that blocks your registration.

Names are a touchy subject with bands. Finding a good band name that everyone can agree on, and that is available for your use, is no picnic. Bands have broken up over lesser issues. That provides all the more reason to do things the right way when choosing your band name, and to take the steps to keep your name proprietary, once you finally find it.

After much discussion and consideration, this band settled on the name - wait for it - "Amazing Grace."

Finding a Good Name Is More Difficult Than Ever

It has been widely reported that “all the good band names are taken.” No less an authority than John Paul Jones (formerly the bassist and keyboardist for Led Zeppelin, now with the supergroup Them Crooked Vultures) has lamented in print, “Think of a great band name and Google it, and you’ll find a French-Canadian jam band with a MySpace page.”

It used to be easier to find a good band name, assuming you were a local act with no superstar ambitions. If a name you liked was already being used by another small act in some distant location, there was no problem. This is because the chances were good that the two bands would never encounter one another, nor one another’s fan base.

You really cannot depend on that kind of coexistence any longer, however. When virtually every band has a MySpace page, a Facebook page or a website (or all three), it becomes more difficult to argue that such a thing as “separate territories” exists. Anyone can access those sites from anywhere and be exposed to the band and its music.

Verily, as the Internet giveth, so the Internet taketh away.

Search Your Band Name

For this reason, when you are choosing a new band name, it’s important to search the name to ensure no one else is using it in a way that might result in an infringement challenge. This doesn’t mean it has to be a name that no one else is using for any goods or services – merely that the public won’t mistakenly believe there is some connection between your use and the use anyone else is making.

When searching, focus on the key words in your proposed name. Ignore any differences created by generic buzz words like “the” and “band.” Are there a number of bands coexisting with the same key word but combining it with other distinctive words? Calling yourself “The Kiss” isn’t going to keep Gene Simmons from suing you, but “Kiss My Grits” might.

If you find a potentially conflicting band name on any of these sites, investigate further. Mere difference in types of music is not a good basis to assume it’s safe to go ahead with use of the name, but it may be another story if the other band is defunct. So is the band still in existence, or did it release one album in 1989 and then disappear? Or was it last heard from a year ago? All of these may mean different things in terms of the assessed risk level.

It’s Worth Talking To An Attorney

Once you find a name that passes your own search test, it’s a good idea to share and discuss your results with an attorney experienced in trademark law. It’s also a very good idea to have him or her conduct a more detailed search that includes registered marks.

There are many reasons why an attorney search is highly recommended. Among them is this: your trademark counsel will have a better sense of what’s a problem in non-musical goods and services. For reasons that will be more apparent in the next installment, that insight can be very important.